Paul's Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

Paul's Retail Pty Ltd v Lonsdale Australia Limited [2012] FCAFC 130

Consent under s 123 of the Trade Marks Act 1995 (Cth) requires that the application of the trade mark to the goods be authorised by the then registered owner within the terms of any licence, including its territorial scope; as the goods in question were manufactured and marked for sale outside the territory licensed to Punch, and there was no evidence of consent by Lonsdale Australia (the registered owner at the relevant time), the appellants could not rely on s 123 as a defence. The importation and sale of these goods constituted use of the mark and thus infringement under s 120.

Parties
First Appellant: Paul's Retail Pty Ltd ACN 114 419 242; Second Appellant: PW Inventory Pty Ltd ACN 128 572 341; Respondent: Lonsdale Australia Limited
Jurisdiction
Australia
Judgment Date
11 September 2012
Procedural Posture
Appeal / Judgment on Appeal
Outcome
Appeal dismissed
Legal Topics
Infringement of Registered Trade Marks, Parallel Importation, Consent in Trade Mark Law, Defences to Infringement Under Trade Marks Act 1995 (cth) S 123, Interpretation of Licence Agreements
Intellectual Property Trade Marks Infringement of Registered Trade Marks Parallel Importation Consent in Trade Mark Law Defences to Infringement Under Trade Marks Act 1995 (cth) S 123 Interpretation of Licence Agreements

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Parties

Paul's Retail Pty Ltd ACN 114 419 242

First Appellant

PW Inventory Pty Ltd ACN 128 572 341

Second Appellant

Lonsdale Australia Limited

Respondent

Procedural Posture

Appeal / Judgment on Appeal

Legal Issues

  1. 1 Whether the importation and sale of goods bearing Lonsdale marks infringed Australian registered trade marks under s 120 of the Trade Marks Act 1995 (Cth)
  2. 2 Whether the s 123 defence applied because the trade marks were applied to the goods with the consent of the registered owner
  3. 3 Application of the Champagne Heidsieck principle under the current Trade Marks Act 1995 (Cth)

Ratio Decidendi

Consent under s 123 of the Trade Marks Act 1995 (Cth) requires that the application of the trade mark to the goods be authorised by the then registered owner within the terms of any licence, including its territorial scope; as the goods in question were manufactured and marked for sale outside the territory licensed to Punch, and there was no evidence of consent by Lonsdale Australia (the registered owner at the relevant time), the appellants could not rely on s 123 as a defence. The importation and sale of these goods constituted use of the mark and thus infringement under s 120.

Court Disposition

Appeal dismissed

Orders

  • The application to adduce further evidence be dismissed.
  • The appeal be dismissed.